This blog has long been a supporter of leveling the playing field for inventors, including supporting pro bono work in the IP field, particularly in the area of patent appeals. The difference in power between an examiner that can essentially indefinitely wear down an applicant, where the applicant is an individual or small business, is monumental. So when an such an applicant encounters an examiner with a grant rate well under 20% (and significantly lower than the art unit), it is important that there are pro bono options to take the case to appeal. One such clinic is Indiana Law's Intellectual Property Law Clinic. As they say on their website, the clinic puts law students “on the forefront of this fast-growing field, giving you real-life experience with real-life clients and their IP needs.” Their clinic is certified by the U.S. Patent and Trademark Office — a distinction awarded to fewer than 10 percent of the nation's law schools. The clinic's director is Norm Hedges.
Today we congratulate Indiana Law and Mr. Hedges, along with his students, in a successful appeal in serial no: 15/046,989. The decision was actually affirmed, but upon a closer look we see Norm and his team were winners and will hopefully be able to move the case forward for their client in continuing prosecution. As noted above, their examiner is at the bottom of the bell curve for their art unit (3734) with an extremely low allowance rate. And you can see why when reviewing the case in detail - the examiner took what appears to be their usual unreasonable approach in rejecting the claims. Fortunately Norm and his team took the case straight up to appeal without rewarding the examiner’s behavior with unnecessary RCEs.
Looking to the substance of the prior art rejection in detail, the examiner followed a common unreasonable examiner trick using unreasonably broad interpretations. The invention relates to a bag for carrying toys and one limitation at issue was whether the cited reference showed the claimed first and second straps:
a first support strap extending between the first perimeter and the second perimeter;
a second support strap extending between the first perimeter and the second perimeter;
The examiner cited a single strap in the prior art and argued that the “claim does not require that the first and second support straps be discontinuous, distinct or otherwise separately defined straps.” As noted above, this is a common way to support an unreasonable interpretation… essentially arguing that the claim does not exclude the prior art. Sometimes, in the face of such an issue, it can make sense to just submit to amending the claims to exclude the unreasonable interpretation. However, that can lead to the examiner then attacking the amendment as unsupported as specifications typically do not have literal support for excluding an unforeseeable and unreasonable interpretation of prior art that was not known to the applicant at the time of drafting.
Other times one must press the issue and appeal to the PTAB to force a more reasonable interpretation, particularly where the claims expressly require two components, although without expressly stating that they are separate components. Case law supports a reasonable interpretation, but one must be sure that the specification supports the interpretation of the components being distinct.
Here, the PTAB correctly noted that the cite art had a continuous strap and thus did not support the rejection. The PTAB explained:
We disagree with the Examiner’s interpretation that the claims do not require separate straps. Indeed, the claims explicitly recite a “first support strap” and a “second support strap” and the Examiner’s interpretation that Whitaker’s single, continuous support strap satisfies both claimed elements is unreasonably broad. See, e.g., Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”).
Furthermore, and although we give claim language their broadest reasonable interpretation, we read such language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). As we read the claim language, namely, the first and second support straps in light of the Specification, we find that the Specification describes two support straps 80, one on each side of bag 200. See, e.g., Spec. ¶¶ 21, 22.
In light of how “first support strap” and “second support strap” are recited in the claims and described in the Specification, the Examiner’s determination that Whitaker’s single continuous strap satisfies the claimed “first support strap” and “second support strap” is unreasonable and constitutes reversible error.
So, do not let an examiner make unreasonable interpretations and know your examiner propensities so that you can effectively prosecute the case without providing unearned RCE rewards. And congrats again to the IU IP team!